Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01373-KAJ Document 250 Filed 04/10/2006 Page 1 of 2
PRICKETT, JONES & ELLIOTT
- . - - A PROFESSIONAI- ;\SSOCl.·\'l`lON
°"‘l?L§§>3§?§§l?i‘“" 1310 KING STREET, Box 1328 11N<§lllic§·rl1liE§;rTrEE·r
w¤¤¢r·Egg?;&;?mbcT=: WILMINGTON, DELAWARE 19899 4}"9°‘
warms 1;.Mlu Address: TEL* (302) 888*6500 mx; (302) 6745864
[email protected] FAX: (302) 658-8111
http: / /www.p1·ickctt.com
April 10, 2006
The Honorable Kent A. Jordan VIA EFILE AND HAND DELIVERY
United States District Court
844 King Street
Wilmington, DE 19801
RE: Ampex Corporation v. Eastman Kodak Company, et al.,
C.A. No. 04-1373-KAJ
Dear Judge Jordan:
Defendants Eastman Kodak Company ("Kodak") and Altek Corporation ("Altek") respectfully
submit this letter seeking to compel Plaintiff Ampex Corporation ("Ampex") to make Dr. George
Ligler, whom Ampex has designated as an expert with respect to both infringement and validity
issues, available for two days of deposition. Defendants have repeatedly attempted to contact
plaintiff to resolve this dispute but have not received a response.
Dr. Ligler intends to submit two separate expert reports in this litigation: one addressing issues
relating to infringement, the other addressing issues of validity. Accordingly, and consistent
with the parties’ prior practice regarding expert depositions, Defendants have requested that
Ampex make Dr. Ligler available for two days of deposition. See March 19, 2006 Emails from
Monica Grewal to Norman Beamer. Ampex, however, reiirses to make Dr. Ligler available for
more than a total of seven hours of deposition. See March 20, 2006 Email from Norman Beamer
to Monica Grewal. Defendants believe that this restriction is unwarranted for the following
reasons.
First, the number and complexity of the issues Dr. Ligler will address require two days of
deposition. Dr. Ligler has been designated as an expert with respect to Ampex’s infringement
allegations and with respect to Ampex’s validity contentions. On March 24, 2006, Dr. Ligler
submitted a 59 page expert report in which he argues that Defendants’ digital cameras infringe
Ampex’s ‘12l patent. Dr. Ligler’s March 24 expert report addresses the alleged infringement of
forty-six models of digital cameras. It attaches six claim charts analyzing the accused cameras
against the ‘ 121 patent and six fact charts evaluating the operation of the accused cameras. See
Initial Disclosure of Expert Testimony of George T Ligler. On April 24, 2006, Dr. Ligler will
submit a separate expert report addressing the validity of Ampex’s ‘ 121 patent in light of the
prior art. Defendants understand that Dr. Ligler’s April 24 expert report will address at least four
different prior art systems identified by Defendants. See February 28, 2006 Email ]$·om Norman
Beamer to Michael Summersgill (indicating Dr. Ligler will address the prior art systems
discussed in the expert reports of Dr. Brad Myers and Dr. Dieter Preuss). Defendants believe
l9660.3\30l532vl

Case 1:04-cv—01373-KAJ Document 250 Filed 04/10/2006 Page 2 of 2
The Honorable Kent A. Jordan
April 10, 2006
Page 2
that one day of deposition is necessary to address Dr. Ligler’s extensive infringement report and
one day of deposition is appropriate to address Dr. Ligler’s validity report.
Second, Ampex’s refusal to make Dr. Ligler available for two days of deposition is contrary to
the parties’ prior practice regarding expert depositions. In the ITC Investigation, the parties
agreed that an expert who submits one expert report on infringement and a separate report on
validity should be made available for at least two days of deposition.
Finally, Ampex claims that two days of deposition are unnecessary because Defendants deposed
Dr. Ligler for two and a half days during the ITC Investigation. See March 19, 2006 Email from
Norman Beamer to Monica Grewal. The infringement and validity issues Dr. Ligler will address
in this litigation, however, are not be the same as those he addressed in the ITC. Dr. Ligler
opines on nineteen newly accused cameras for the first time in his March 24 expert report.
Defendants understand that in his April 24, 2006 expert report, Dr. Ligler will attempt to rebut
the expert opinion of Dr. Dieter Preuss, one of Defendants’ validity experts who was not
involved in the ITC Investigation. See February 28, 2006 Email from Norman Beamer to
Michael Summersgill. In his expert report, Dr. Preuss explains his opinion that the claims of the
‘l2l patent are invalid in light of the Scitex Response 300 system, a prior art device that was not
at issue during the ITC Investigation. Moreover, Defendants understand that, in this litigation,
Ampex will seek a full day of deposition for each expert who offers a non-infringement opinion
on behalf of Defendants, and a full day of deposition for each expert who offers an invalidity
opinion on behalf of Defendants, even for those experts it already deposed in the ITC
proceedings.
For the foregoing reasons, Defendants respectfully ask the Court to compel Ampex to make Dr.
Ligler available for two days of deposition.
Respectfully submitted, *1
PAUL M. LUKOFF
PML/mhl
cc: Clerk of the Court (Via Hand)
Jack B. Blumenfeld, Esquire (Via Efiling & E-Mail)
Norman H. Beamer, Esquire (Via E-Mail & FedEx)
Jesse J. J enner, Esquire (Via E—Mail)
S. Calvin Walden, Esquire (Via E-Mail)
Michael J. Summersgill, Esquire (Via E-Mail)
Jordan L. Hirsch, Esquire (Via E-Mail)
19660.3\301532vl